Madras High Court
M/S.S.N.R.Dhall Mill vs M/S.Kaleesuwari Refinary Private ... on 26 July, 2022
Author: M.Duraiswamy
Bench: M.Duraiswamy
O.S.A.(CAD)No.82 of 2021
IN THE HIGH COURT OF JUDICATURE AT MADRAS
RESERVED ON : 06.07.2022
PRONOUNCED ON : 26.07.2022
CORAM
THE HON'BLE Mr.JUSTICE M.DURAISWAMY
AND
THE HON'BLE Mr.JUSTICE SUNDER MOHAN
O.S.A.(CAD)No. 82 of 2021
and C.M.P.No.16023 of 2021
M/s.S.N.R.Dhall Mill
A registered partnership firm
represented by its partner S.Vijay Kumar
No.2/4, Vaidyanatha Mudali Street,
Tondiarpet, Chennai, 600 081, Tamilnadu
... Appellant/Plaintiff
Versus
M/s.Kaleesuwari Refinary Private Limited
53, Rajasekaran Street,
Opp. Kalyani Hospital, Radhakrishnan Salai,
Chennai-6000004, Tamil Nadu ... Respondent/Defendant
PRAYER: Original Side Appeal filed under Section 13(1) of Commercial
Court Act, to set aside the Judgement and decree passed by this Court in
C.S.No.164 of 2017 dated 26.04.2021, allow the O.S.A.
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O.S.A.(CAD)No.82 of 2021
For Appellant ... Mr..Ramesh Ganapathy
For Respondent ... Mr.P.S.Raman (Senior Counsel)
for Mr.Suriya Senthil
for M/s.Surana & Surana
JUDGEMENT
SUNDER MOHAN,J.
Challenging the Judgement and decree dated 26.04.2021 made in C.S.No.164 of 2017, the appellant has preferred the above Original Side Appeal.
2.The case of the Appellant/Plaintiff's in the suit was that they were a registered partnership firm and had registered themselves with various Statutory Authorities for the purpose of their business. They were also registered under the Tamil Nadu Food Safety and Drugs Administration. In order to create the brand identity for quality products manufactured and sold by them, they conceived, adopted and used the Trade Mark ''GOLD WINNER'' since 1999 for dhall and Flour varieties. They had obtained registration for the mark ''GOLD WINNER'' (LABEL) under Class 30. They generated enormous amount of goodwill and reputation in the Trade circles and that their Trade Mark ''GOLD WINNER'' is well established and well 2/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 known Trade Mark. Thus, according to the Appellant/Plaintiff, they acquired both Statutory and Common Law Right of the said Trade Mark. According to the Appellant/Plaintiff, the Respondent/Defendant was doing the business of selling Sunflower oil and Vanaspati under the Trade Mark ''GOLD WINNER'' registered under Class 29. The Respondent/Defendant was selling dhall varieties under Trade Mark ''SREE GOLD'' since 2005 registered under Class 30. During that time, the Respondent/Defendant filed a rectification petition before the Trade Mark Registery, challenging the registration of the Appellant/Plaintiff's Trade Mark ''GOLD WINNER''. However, for the reasons best known to them, the Respondent/Defendant had withdrawn the said rectification petition on 30.01.2013, at the final stage. Thereafter, in the year 2017, the Respondent/Defendant started manufacturing and selling dhall varieties in the name ''GOLD WINNER'' which was deceptively similar to the Appellant/Plaintiff's registered Trade Mark. The Respondent/Defendant were aware of the prior registration of Appellant/Plaintiff's Trade Mark for dhall varieties and the Act of introducing dhall varieties in the same name ''GOLD WINNER'' showed dishonest and malafide intention. In fact, the Respondent/Defendant were selling their dhall products in the name of registered Trade Mark ''SREE 3/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 GOLD'' till 2017 and the sudden change was made fraudulently and dishonestly to cut into the Appellant/Plaintiff's business and piggy back on its reputation in the Trade circles. The appellant therefore, prayed for permanent injunction restraining the Respondent/Defendant from infringing the Trade Mark and passing off their goods bearing the impugned Trade Mark as that of the Appellant/Plaintiff's goods and for consequential reliefs.
3.The Respondent/Defendant filed a written statement stating inter alia that they were the largest Sunflower oil Manufacturers in India and their brand ''GOLD WINNER'' is ranked among the top 100 FMCG consumer brands in India and is No.1 in the Edible Oils Category in South India. They adopted and conceived the mark ''GOLD WINNER'' in January 1993 with distinctive character for oil and vanaspati. They were the proprietor of the invented Trade Mark for almost 25 years and were registered under Class 29 for ''GOLD WINNER'' and Class 30 for the mark ''GOLD WINNER SREE GOLD''. The Respondent/Defendant launched a range of dhall products in the year 2005 under the Trade Mark ''GOLD WINNER SREE GOLD''. The Respondent/Defendant is the absolute proprietor of the Trade Mark ''GOLD WINNER'' and various Trade Marks 4/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 registration in Class 29 and Class 30. They had also secured international Trade Mark registration for its mark ''GOLD WINNER''. By virtue of their extensive use, statutory registration as well as publicity, they enjoyed exclusive proprietory rights over the mark ''GOLD WINNER'' and the said mark is synonymous with their goods and business. The public, at large, associated ''GOLD WINNER'' with the products of the Respondent/Defendant. They had spent Crores of Rupees towards advertising their products in all forms of Media all over the world. They had not pursued the rectification petition against the Appellant/Plaintiff, since they found that the Appellant/Plaintiff did not sell any products in the retail market bearing the mark ''GOLD WINNER'' during an independent research conducted by them. The Appellant/Plaintiff had suppressed that they had recently filed Trade Mark applications in the year 2018 for the word Mark ''GOLD WINNER'' and this suppression and the very fact that they had applied for the word mark ''GOLD WINNER'' shows that they had no right over the word mark ''GOLD WINNER''. The Respondent/Defendant further stated that they were prior users of the Trade Mark ''GOLD WINNER''. The Appellant/Plaintiff had registered Trade Mark only in respect of the device which consisted of several components 5/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 such as the words ''GOLD WINNER'', the device of a running man, the text '' Trade Mark'' and ''Toor dhall'' and several other parts and there was no separate registration for the word mark ''GOLD WINNER''. The Respondent/Defendant further stated that the Appellant/Plaintiff was not using the label mark for retail selling. They had been using it in the wholesale market and prayed for dismissal of the suit.
4.The Appellant/Plaintiff examined two witnesses and marked Exs.P.1 to Ex.P41 and M.O.1 on their side. The Respondent/Defendant examined one witness and marked Exs.D.1 to D.52 documents on their side. As many as 15 issues were framed by the learned Single Judge. The learned Single Judge held in favour of the Respondent/Defendant herein as regards most of the issues. The issues framed by the learned Single Judge and the findings in brief are extracted below in the form of tabular column for better understanding:
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1. Whether the defendant's act of The defendant in selling their selling dhall products by changing Toor dhall products in the name their existing packaging style, get ''GOLD WINNER'', would up & colour combination from neither amount to infringement “SREE GOLD” to ''GOLD of trademark of the plaintiff nor WINNER'' will amount to can be categorised as passing infringement of registered off their products as if there are trademark of the plaintiff and the products of the plaintiff. passing off ?
2. Whether the defendant has any The defendant has no registered registered trade mark for the mark trademark in the name ''GOLD ''GOLD WINNER'' class 30 in WINNER'' under Class 30.
respect of dhall ?
3. Whether the defendant's The act of adopting the mark registration of trademark ''GOLD ''GOLD WINNER'' for products WINNER'' in class 29 in respect of under Class 30, the defendant edible oils will give any right in are neither infringing the class 30 in respect of dhall as registered mark of the plaintiff well ? in view of the restrictions under Section 17(2) of the Trade Marks Act, 1999, nor can it be imputed that they are passing off their products as if they are the products of the plaintiff, in view of the discussions above, where it has been clearly held that the distribution channels and class of customers are totally different and that the packagings are different and that the marks are both represented in a totally different manner, both with respect to the 7/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 S.No Issues Findings writings and also with respect to the colour combination, that therefore, there cannot be any cause for confusion.
4. Whether the defendant's Registration under Class 29 can registration of the trademark SREE be restricted to Class 29 alone, GOLD” label in class 30 for dhall and whether the defendant is will also give any protection to the estopped from claiming any term ''GOLD WINNER'' ? right over the mark ''GOLD WINNER'' under Class 30, in view of the withdrawal of the earlier objection I hold that the matters have moved towards the realm of the authorities were Exs.D.47 and D.52 have been filed and are pending. It would therefore be inappropriate on the part of this Court to dwell deeply into the aspects which are covered under Exs.d.47 and D.52
5. Whether the trademark “GOLD The usage or subsequent WINNER (LABEL)” has been adoption of the mark from coined and honestly adopted by Winner to ''GOLD WINNER'' plaintiff ? by the plaintiff is tainted with an underlying object to ride on the reputation already built by the defendant.
6. Whether the plaintiff is the The plaintiff is the registered registered proprietor of the proprietor of the trade mark trademark “GOLD WINNER” ? ''GOLD WINNER''.
7. Whether trademark registration of The plaintiff cannot claim 8/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 S.No Issues Findings a device mark grants exclusive exclusive right since the words rights to the word mark alone ''GOLD WINNER'' is only a when such word mark is only a part of the whole of their part of the whole of the registered registered trademark. trademark?
8. Whether the plaintiff has proved The plaintiff had not proved the actual use of the registered actual use of the registered trademark “GOLD trademark ''GOLD WINNER'' WINNER(LABEL)”? (LABEL)''
9. Whether the image of the The image in MO 1, 5 kg bag is plaintiff's 5 kg product bag is not consistent with the consistent with the registered registered trademark ''GOLD trademark “GOLD WINNER WINNER (LABEL)''.
(LABEL)” under application
NO.1232740?
10. Whether the plaintiff adopted the Plaintiff did not adopt the
trademark “GOLD WINNER trademark ''GOLD WINNER
(LABEL)” before the defendant's (LABEl) before the defendant's
mark “GOLD WINNER” had mark ''GOLD WINNER'' had
already earned a reputation in the already earned a reputation in
market ? the market.
11. Whether the plaintiff has sold The plaintiff has not established
dhall under the trademark “GOLD continuous presence in the retail
WINNER”in the retail market ? If market. They have also not
yes, what is the plaintiff-s turn established their turnover in the
over in the retail market ? retail market.
12. Whether the invoices produced by The invoices have not been the plaintiff in respect of its 5 kg “ proved by the plaintiff in GOLD WINNER (LABEL)” bags manner known to law.
are genuine or forged ?
13. What are the plaintiff's expenses The plaintiff has not proved 9/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 S.No Issues Findings towards advertisement/ publicity their expenses towards in respect of dhalls under the advertisement with respect to trademark “GOLD WINNER Toor dhalls marketed under the (LABEL)” ? trademark ''GOLD WINNER (LABEL).
14. Whether the copyright Copyright relates to the artistic registrations done by the defendant work. The defendants are will give any right to the defendant neither infringing the registered to use the trademark ''GOLD trademark of the plaintiff, nor WINNER'' for their dhall are they passing off their products ? products as if they are the products of the plaintiff. The plaintiff has also not laid the suit on the basis of infringement of any copyright. The issue is answered accordingly reiterating the right of the defendant over the registered artistic work.
15. Whether the defendant has The answer to this issue is the estopped their rights over the same as the answer to issue trademark “GOLD WINNER” in No.3 respect of dhall products by withdrawing the rectification/cancellation petition filed by the defendant before the Trademark Registry against the plaintiff-s registration of the trademark “GOLD WINNER” in class 30 in respect of dhall products?
5.The learned Single Judge held that the usage of adoption of the 10/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 mark from ''WINNER'' to ''GOLD WINNER'' by the Appellant/Plaintiff was only with the object to ride on the reputation built by the Respondent/Defendant. They did not adopt the Trade Mark ''GOLD WINNER'' (LABEL) before the Respondent/Defendant's mark ''GOLD WINNER'' had earned reputation in the market. Though, the Appellant/Plaintiff was the registered proprietor of the Device Mark, they cannot claim exclusive right since the words ''GOLD WINNER'' was only a part of the whole of the registered Trade Mark. The learned Single Judge also found that the Appellant/Plaintiff had not proved the actual use of the registered Trade Mark ''GOLD WINNER'' (LABEL) and the image in M.O.1, which is a bag said to have been used by the Appellant/Plaintiff, is not consistent with the registered Trade Mark of the Appellant/Plaintiff. They have also not established their continuous presence in the retail market and their turn over. The learned Single Judge held that the Appellant/Plaintiff, have not proved their expenses towards advertisements with regard to ''Toor dhall''. Therefore, the learned Single Judge held that the act of the Respondent/Defendant in selling dhall products in the name of ''GOLD WINNER'' would neither amount to infringement of trademark of the Appellant/Plaintiff nor can be categorised as passing off their products as if 11/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 they are the products of the Appellant/Plaintiff. The distribution channels and class of customers are totally different. The packaging is different and the marks are both represented in a totally different manner, both with respect to the writings and also with respect to the combination and therefore, there cannot be any cause for confusion. Thus, the learned Single Judge dismissed the suit and ordered that the Respondent/Defendant was entitled to the fees and expenses of the witness, the legal fees and expenses incurred and for other expenses incurred in connection with the judicial proceedings.
6.Aggrieved by the judgement of the learned Single Judge, the Appellant/Plaintiff has preferred the above appeal.
7.Heard Mr.Ramesh Ganapathy, learned counsel appearing for the Appellant/Plaintiff and Mr.P.S. Raman, learned Senior counsel appearing for the Respondent/Defendant.
8.Mr.Ramesh Ganapathy, learned counsel for the Appellant/Plaintiff submitted that :
(a) The Appellant/Plaintiff had been using the Trade Mark ''GOLD 12/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 WINNER'' for the dhall products ever since 2005. The Respondent/Defendant, who are selling the dhall products in the name of ''SREE GOLD'' from 2006, all of a sudden, in the year 2017, started selling the dhall products by using the Trade Mark ''GOLD WINNER'' with a dishonest intention.
(b) The learned counsel also relied upon the observations of this Court made in O.S.A.No.110 of 2018 dated 08.10.2018 which was filed by the Respondent/Defendant challenging the order of interim injunction in the very same suit. The Division Bench, after recording the facts, held that the Appellant/Plaintiff was entitled to continuance of injunction granted by the learned Single Judge in-so-far as passing off action is concerned.
(c)The learned counsel submitted that merely because the Respondent/Defendant had registration under Class 29, they cannot adopt the same Trade Mark for goods and service falling under a different class.
(d)The learned counsel further submitted that as per Section 29(3) of the Trade Marks Act, when the Respondent/Defendant mark is identical with that of the Appellant/Plaintiff's registered Trade Mark, the Court shall presume that it is likely to cause confusion on the part of the public and the Appellant/Plaintiff need not independently establish the actual confusion 13/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 caused to the public.
(e)The learned counsel submitted that Section 29 (9) is an Exception to the Anti-dissection Rule in Section 17 (2) of the Trade Marks Act. The learned counsel further submitted that the essential feature in the registered Trade Mark of the Appellant/Plaintiff was the word ''GOLD WINNER'' and the Respondent/Defendant has clearly infringed that essential feature of the Trade Mark.
(f) The learned counsel further submitted that in action for infringement, it is immaterial whether the Appellant/Plaintiff are doing wholesale or retail business and the learned Single Judge's finding in this regard is not in accordance with law.
(g) The learned counsel also submitted that having withdrawn the rectification petition, the Respondent/Defendant cannot have any right to use the Trade Mark ''GOLD WINNER''. In support of his contentions, the learned counsel relied upon the judgements of the Hon'be Apex Court in Vishnudas Trading as Vishnudas Kishendas vs. Vazir Sultan Tobacco Co.
Ltd., Hyderabad and Another reported in (1997) 4 SCC 201, Renaissance Hotel Holdings inc. vs. B.Vijaya Sai and others reported in 2022 (2) CTC 175. 14/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021
9.Mr.P.S.Raman, learned Senior Counsel appearing for the Respondent/Defendant would submit that :
(a)The Appellant/Plaintiff had come to the Court with false averments and were guilty of fabrication of records and for giving false evidence and no relief ought to be granted to them on this ground alone.
(b)The Appellant/Plaintiff had only registered Trade Mark for the device which consisted of a running man, the text ''GOLD WINNER'' and text Trade Mark and Toor dhall. The Appellant/Plaintiff themselves have disowned this Trade Mark as could be seen from the M.O.1 bag wherein there is nothing similar to the registered Trade Mark of the Appellant/Plaintiff. The learned Senior Counsel submitted that the FSSAI number in the M.O.1 bag was different from the registered FSSAI number.
The Appellant/Plaintiff had hurriedly printed the material on the M.O.1 bag in order to falsely claim that they were doing retail business also. In doing so, they had printed a fake FSSAI registration number and also ignored their registered Trade Mark and falsely claimed that the mark in the M.O.1 bag was registered. The Appellant/Plaintiff are also guilty of giving false evidence through P.W.2, who was examined to show that he was running a 15/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 retail store and selling the Appellant/Plaintiff's products in retail. In his examination, he admitted that there was a furniture store in that address and he changed the name of the store as M/s.Malathy & Sons only after he was cross examined by the Respondent/Defendant's counsel. The learned Senior counsel, therefore, submitted that the Appellant/Plaintiff had not only failed to establish that the Respondent/Defendant had committed acts of passing off , but also guilty of producing false and fabricated evidence.
(c) The learned Senior Counsel further submitted that in the case of infringement, since the Appellant/Plaintiff has not challenged the Division Bench Judgement made in O.S.A.No.110 of 2018, dated 08.10.2018 and have not produced any evidence during the trial to dislodge that finding, the finding of the Division Bench of this Court in O.S.A.No.110 of 2018 dated 08.10.2018, that Prima Facie no infringement was established, has become final. On the other hand, the evidence adduced during the trial, only further strengthened the finding of the Division Bench.
(d)The learned Senior Counsel submitted that the Respondent/Defendant coined the word ''GOLD WINNER'', which is not an English word, in the year 1990 and established good reputation by using the Trade Mark ''GOLD WINNER''. The Appellant/Plaintiff, in fact, was 16/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 guilty of riding on the Respondent/Defendant's reputation. The Appellant/Plaintiff, in fact, attempted to apply for the registration of the word mark and was not successful in obtaining the same.
(e) The learned Senior Counsel submitted that the Respondent/Defendant was entitled to expand their business to allied products. The Appellant/Plaintiff had never done retail business and infact there was no reference about their doing retail business either in the plaint or in the injunction application. It was only after the Respondent/Defendant took the stand that the Appellant/Plaintiff was not doing any retail sale, the Appellant/Plaintiff produced M.O.1 and certain fake invoices. The invoices marked along with the plaint only consisted of sales made in 100 Kilogram bags or more. In fact, the FSSAI registration of the Appellant/Plaintiff was only for wholesale business. Therefore, the learend Senior Counsel contended that in view of the false claim made by the Appellant/Plaintiff, they are not entitled to any relief.
(f) The learned Senior Counsel also submitted that the registered Trade Mark was only a composite mark and the registration will not give any benefit to individual components of the composite mark. In support of 17/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 his contention, the learned Senior counsel relied upon the judgement of the Division Bench of this Court in M/s.Pathanjali Ayurved Limited and Divya Yog Mandir Trust vs. Arudra Engineers Private Limited reported in (2021) 2 MLJ 180. The learned Senior Counsel submitted that there can be only a device by device comparison, since the Appellant/Plaintiff does not have registration for the word ''GOLD WINNER''. In any event, they have not invented the word. The learned Senior counsel submitted that the Judgement of the Hon'ble Apex Court in Renaissance case (cited supra) relied upon by the learned counsel for the Appellant/Plaintiff cannot be applied to the facts of the case, as the Hon'ble Apex Court was dealing with a word mark.
10.We have given our consideration to the arguments of the learned counsels on either side, the pleadings and the evidences on record. The admitted facts are that the Respondent/Defendant had registered Trade Mark for word ''GOLD WINNER'' as well as for the device in Class 29. The Appellant/Plaintiff have a registered Trade Mark for the device containing the word ''GOLD WINNER'', a picture of running man and the text ''Toor dhall'' and ''Trade Mark''. Neither the Appellant/Plaintiff nor the 18/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 respondent/Defendant have registration for the word ''GOLD WINNER'' under Class 30. In fact, the Appellant/Plaintiff had originally applied for the registration of word ''GOLD WINNER'' and according to them, since the file relating to their application was misplaced by the Trade Mark Registry, they applied again for the registration. However, they applied only for the device mark in the second application. It is also a fact that the Appellant/Plaintiff had again applied in the year 2018 for the registration of the mark ''GOLD WINNER'' in Class 30 and their application is still pending. The learned Single Judge held that the Respondent/Defendant did not have any registered Trade Mark for the mark ''GOLD WINNER'' in Class 30 in respect of dhall.
11.In the light of the above admitted facts, we have to examine whether the Respondent/Defendant has infringed the registered Trade Mark of the Appellant/Plaintiff. As stated earlier, the registered Trade Mark of the Appellant/Plaintiff is a device mark. In view of Section 17 of the Trade Marks Act, when the Trade Mark consists of several parts, its registration shall confer upon the proprietor, the exclusive right to the use of Trade Mark, taken as a whole and the registration shall not confer exclusive right 19/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 in the matter forming only a part of the whole of the Trade Mark registered. When examined in the light of the statutory provision under Section 17, we find that the registered Trade Mark of the Appellant/Plaintiff is not similar to the mark adopted by the Respondent/Defendant. We compared the composite marks of the Appellant/Plaintiff and that of the Respondent/Defendant and we are of the view that the Respondent/Defendant's mark could not deceive any buyer and cause any confusion to him that the Respondent/Defendant's mark is similar to the Appellant/Plaintiff's registered mark. The finding of the learned Single Judge is also to that effect and we find that the said finding is justified. The Appellant/Plaintiff also admitted that when the two marks are compared, as a whole, they are different. In this regard, we quote the observations of the Division Bench of this Court made in M/s.Pathanjali Ayurved Limited and Divya Yog Mandir Trust vs. Arudra Engineers Private Limited reported in (2021) 2 MLJ 180, while considering the scope of Section 17 of the Trade Marks Act, was pleased to hold as follows:
''79. Further, even under Section 17 of the Trade Marks Act, 1999, protection is only afforded to the entire trademark as registered, and not to mere parts of the trade mark. In the instant case, registration has been 20/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 O.S.A.No.169 of 2020 obtained by the plaintiff over the label with the words and alpha numeral Coronil 92B and Coronil 213 SPL as a composite mark and not as a word for “Coronil as envisaged under Section 15. Therefore, for the purpose of Section 29 (4) of the Trade Marks Act, 1999, the respondent/plaintiff cannot claim monopoly over the word "Coronil" as it was registered as a part of composite mark. We also wish to observe that when each part of a label mark is capable of being individually registered, we cannot dissect and split up into its component parts and grant an injunction. In this regard, we are fortified by the decision of the Division Bench of this Court in Rhizome Distilleries case, mentioned supra and useful reference can be made to the observations made therein:-
"Conflicting composition marks are to be compared by looking at them as a whole, rather than breaking the marks up into their component parts for comparison. This is the 'anti-dissection' rule.... A mark should not be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. It has been held to be a violation of the anti-dissection rule to focus upon the 'prominent' feature of a mark and decide likely confusion solely upon that feature, ignoring all other elements of the mark. Similarly, it is improper to find that one portion of a composite mark has no trademark significance, leading to a direct comparision between only that which remains."21/42
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81. Though the respondent's/plaintiff’s label registered as a trademark and incorporates the word “Coronil”, it cannot be said that the word “Coronil”adopted by the appellants/defendants was similar to that of the registered labels of the respondent/plaintiff.''
12.The Appellant/Plaintiff's contention is that Exception to the Anti-Dissection Rule is found in Section 29 (9) of the Trade Marks Act and their case would fall under Section 29 (9), which is extracted hereunder:
(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
The learned counsel for the Appellant/Plaintiff would submit that the distinct and the essential feature of the registered Trade Mark are the words ''GOLD WINNER'' and if that has been infringed, then not withstanding the fact that the colour and font, get up etc., are different, a case of infringement would be made out. The registered Trade Mark, according to him, came 22/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 with the disclaimer, which is as follows:
''Registration of this Trade Mark shall give no right to the exclusive use of DEVICE OF MAN OTHER DESCRIPTIVE MATTERS APPEARING IN THE LABEL.'' Therefore, the submission of the learned counsel was that the remaining feature in the registered Trade Mark was the word ''GOLD WINNER'' as otherwise, the very registration becomes meaningless.
13.The learned counsel relied upon the following observations of the Hon'ble Supreme Court in Renaissance Hotel Holdings Inc. vs. B.Vijaya Sai and Others reported in 2022 (2) CTC 175:
''43. The legislative scheme is clear that when the mark of the defendant is identical with the registered trade mark of the plaintiff and the goods or services covered are similar to the ones covered by such registered trade mark, it may be necessary to prove that it is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. Similarly, when the trade mark of the plaintiff is similar to the registered trade mark of the defendant and the goods or services covered by such registered 23/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 trade mark are identical or similar to the goods or services covered by such registered trade mark, it may again be necessary to establish that it is likely to cause confusion on the part of the public. However, when the trade mark of the defendant is identical with the registered trade mark of the plaintiff and that the goods or services of the defendant are identical with the goods or services covered by registered trade mark, the Court shall presume that it is likely to cause confusion on the part of the public.
......
47. It could thus be seen that this Court again reiterated that the question to be asked in an infringement action is as to whether the defendant is using a mark which is same as, or which is a colourable imitation of the plaintiff’s registered trade mark. It has further been held that though the get up of the defendant’s goods may be so different from the plaintiff’s goods and the prices may also be so different that there would be no probability of deception of the public, nevertheless even in such cases, i.e., in an infringement action, an injunction would be issued as soon as it is proved that the defendant is improperly using the plaintiff’s mark. It has been reiterated that no case of actual deception nor any actual damage needs to be proved in such cases.24/42
https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 This Court has further held that though two actions are closely similar in some respects, in an action for infringement, where the defendant’s trade mark is identical with the plaintiff’s trade mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion.'' We find that the Hon'ble Apex Court was dealing with the word mark ''Renaissanace ''. The following observations of the Hon'ble Apex Court would make that clear:
''3. The appellant/plaintiff filed a suit being O.S. No. 3 of 2009 before the trial court claiming a decree of permanent injunction to restrain the respondents/defendants from using the trade mark “SAI RENAISSANCE” or any other trade mark identical with the appellant/plaintiff’s trade mark “RENAISSANCE”,....'' Since the Hon'ble Apex Court was dealing with a word mark which was the essential feature of the registered Trade Mark and the observations were made in that context, those observations may not help the Appellant/Plaintiff in the instant case, unless it is established by them that 25/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 the words ''GOLD WINNER'' is the essential feature of their registered Trade Mark.
14.It is settled law that the essential feature in a Trade Mark has to be determined in the facts and circumstances of each case. The identification of the essential feature of a mark is a question of fact and depends on the Judgement of the Court based on the evidence let in before it as regards the usage of the Trade. The Hon'ble Supreme Court in Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmacutical Laboratories, reported in (1965) 1 SCR 737 : AIR 1965 SC 980, was pleased to observe as follows:
''........
29.......'The identification of the essential features of the mark is in essence a question of fact and depends on the judgement of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimates analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.'' 26/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021
15. From the pleadings and the evidence on record, we find that the Respondent/Defendant had registered Trade Mark for the word ''GOLD WINNER'' in Class 29. They had coined the word ''GOLD WINNER'' in the year 1993 and established a very good reputation in the market by using the mark ''GOLD WINNER'' in Class 29. The Appellant/Plaintiff were using the mark ''WINNER'' for their products under Class 30 and in the year 1999, they had started using the word ''GOLD WINNER'' for their products. It is also seen from the evidences that the Respondent/Defendant had already established the mark ''GOLD WINNER'' in the market. Therefore, we are of the view, that the word ''GOLD WINNER'' has not been coined by the Appellant/Plaintiff. In fact, the learned Single Judge, had, based on the evidence on record, held that the Appellant/Plaintiff were aware of the fact that the Respondent/Defendant were using ''GOLD WINNER'' mark for their products in Class 29 and adopted the mark used by the Respondent/Defendant, dishonestly. That apart, we find that the appellant, were conscious of the fact that it would not be possible for them to obtain registration of the word mark ''GOLD WINNER'', had applied only for the device mark and obtained the same. We are unable to accept the Appellant/Plaintiff's version that, since their original application for 27/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 registration of the word mark was misplaced by the Registry, they had to make the second application. If that was the case, the Appellant/Plaintiff ought to have once again applied for the word mark and not for the device mark. Further, we find that the appellant had applied for registration of the word mark in the year 2018 and the said application is still pending. All these facts are enough to show that the word ''GOLD WINNER'' is not the essential feature of the registered Trade Mark of the Appellant/Plaintiff.
16.That apart, we also find that at the time of filing of the suit, the Appellant/Plaintiff had filed invoices to prove the usage of the registered Trade Mark. The invoices produced by them would suggest that they were doing only wholesale business and selling products in bags containing a minimum of 100 Kilograms. The Appellant/Plaintiff had produced bags, which is marked as M.O.1 only at a later stage, after the Respondent/Defendant filed their counter in the interim injunction application stating that the Appellant/Plaintiff was not doing retail business. As rightly contended by the learned Senior Counsel for the Respondent/Defendant, we find that the M.O.1 bag does not contain the registered Trade Mark of the Appellant/Plaintiff. On the other hand, a different mark was printed and the Appellant/Plaintiff claimed it to be a 28/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 registered Trade Mark by printing the symbol '' ® '' thereby suggesting that it was registered Trade Mark. FSSAI number in the M.O.1 bag did not tally with the number in the FSSAI Certificate issued by the Tamil Nadu Food Safety and Drugs Administration Department. Further, the FSSAI registration also shows that the Appellant/Plaintiff were doing wholesale business. The M.O.1 bag, therefore, is not genuine and its production before the Court was an attempt to establish that the Appellant/Plaintiff were also doing retail business. This is also confirmed by the evidence of P.W.2, who was examined to substantiate the Appellant/Plaintiff's name that they are selling dhall in retail market. He claimed to run a Departmental Store in the name of M/S.Malathy & Sons in a particular address. He admitted in his cross examination that he changed the name board to M/S.Malathy & Sons, only after the cross examination was done by the Respondent/Defendant's counsel on a previous occasion. The Appellant/Plaintiff, therefore, is not entitled to any relief from this Court for this conduct alone. All these facts would show that the Appellant/Plaintiff had not established that they were doing retail business. They were also not able to establish the quantum of business by producing any documents, such as bills etc.
17. In an action of passing off, the following factors have to be 29/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 considered in view of the judgement of the Hon'ble Apex Court in Cadila Health Care Ltd., vs. Cadila Pharmaceuticals Ltd., reported in (2001) 5 SCC 73. The relevant portion is extracted hereunder:
''...
35.Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered:
a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.
b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
c) The nature of the goods in respect of which they are used as trade marks.
d) The similarity in the nature, character and performance of the goods of the rival traders.
e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
f) The mode of purchasing the goods or placing orders for the goods and
g) Any other surrounding circumstances which may be 30/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 relevant in the extent of dissimilarity between the competing marks.'' Taking into consideration the above factors, in the light of the facts of the instant case that we have elaborated earlier, we find that the Respondent/Defendant had not committed the acts of passing off their goods as that of Appellant/Plaintiff.
18. We also find that the Respondent/Defendant had established good reputation in the market in Class 29, though their mark has not been adjudged as well known mark. They are entitled to expand their business in other allied products in a different Class by adopting the established Trade Mark. Such expansion using the established Trade Mark cannot be prevented, unless it is calculated to deceive or to divert the business of the Appellant/Plaintiff. In the facts of the instant case, we are of the view that the Respondent/Defendant's action was not calculated to deceive the public or to divert the business of the Appellant/Plaintiff or to cause confusion between the two marks, but only to take advantage of their well established mark in an allied product.
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19. Thus, we are of the view that the Respondent/Defendant has neither infringed the registered Trade Mark of the Appellant/Plaintiff nor committed acts of passing off. We find that the learned Single Judge has come to the correct conclusion in respect of other issues as well. Therefore, we find that there is no merit in the above appeal. However, we are of the view that the observation of the learned Single Judge as regards the entitlement of fees and expenses of the witness, the legal fees and expenses incurred and for any other expenses incurred in connection with the Judicial proceedings can be modified as awarding only costs. Accordingly, the Original Side Appeal is dismissed with costs. Consequently, connected miscellaneous petition is closed.
[M.D.J] [S.M.J] 26.07.2022 Index : Yes/No Internet : Yes Speaking/Non-Speaking orders vsn 32/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 M.DURAISWAMY. J, and 33/42 https://www.mhc.tn.gov.in/judis O.S.A.(CAD)No.82 of 2021 SUNDER MOHAN J, vsn Pre-delivery Judgement made in O.S.A.(CAD)No. 82 of 2021 and C.M.P.No.16023 of 2021 26.07.2022 34/42 https://www.mhc.tn.gov.in/judis